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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
`V.
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`PERSONAL WEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC
`Patent Owners
`
`Case IPR2013-00596
`Patent 7,802,310
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`APPLE’S MOTION FOR PRO HAC VICE ADMISSION OF MICHAEL D.
`JAY UNDER 37 C.F.R. § 42.10(c)
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`Mail Stop "PA TENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Apple Inc. ("Apple") respectfully
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`requests the pro hac vice admission of Michael D. Jay in this proceeding. In email
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`correspondence between Petitioner and Patent Owner dated October 14, 2014, Patent
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`Owner agreed not to oppose this motion.
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`II.
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`GOVERNING LAW, RULES, AND PRECEDENT
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`Section 42.10(c) states as follows:
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`The Board may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner and
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`to any other conditions as the Board may impose. For
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`example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney
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`and has an established familiarity with the subject matter
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`at issue in the proceeding.
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`The Board has stated that motions for pro hac vice admission under 37 C.F.R.
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`§ 42.10(c) must be filed in accordance with the "Order - Authorizing Motion for Pro
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`Hac Vice Admission" entered in Case 1PR2013-00010 (MPT)
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`("Motorola Order").
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`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
`See, e.g., Case 1PR2012-00006 (SGL) (Paper 18); Case 1PR2012-0035 (SQL) (Paper
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`13).
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`The Motorola Order requires that such motions (1) "[c]ontain a statement of
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
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`during the proceeding;" and (2) "[b]e accompanied by an affidavit or declaration of
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`the individual seeking to appear attesting to the following":
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`i.
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`ii.
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`iii.
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`iv.
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`Membership in good standing of the Bar of at least
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`one State or the District of Columbia;
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`No suspensions or disbarments from practice before
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`any court or administrative body;
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`No application for admission to practice before any
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`court or administrative body ever denied;
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`No sanctions or contempt citations imposed by any
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`court or administrative body;
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`V. (cid:9)
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`The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials set forth
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`in part 42 of the C.F.R.;
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`vi. (cid:9)
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`The individual will be subject to the USPTO Code
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`of Professional Responsibility set forth in 37 C.F.R.
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`§S 10.20 et seq. and disciplinary jurisdiction under
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`37 C.F.R. § 11.19(a);
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`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE IPR2013-00596
`vii. All other proceedings before the Office for which
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`the individual has applied to appear pro hac vice in
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`the last three (3) years; and
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`viii.
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`Familiarity with the subject matter at issue in the
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`proceeding.
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`III. STATEMENT OF FACTS
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`Based on the following facts, and supported by the Affidavit of Mr. Jay
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`(Ex. 103 6) submitted herewith, Petitioner requests the pro hac vice admission of
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`Michael D. Jay in this proceeding:
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`1.
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`Petitioner’s lead counsel, David K.S. Cornwell, is a registered
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`practitioner (Reg. No. 31,944).
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`2.
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`Mr. Jay is an attorney at the law firm of Boies, Schiller & Flexner (Ex.
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`1036 at[3.)
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`3.
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`Mr. Jay is an experienced patent litigation attorney. Mr. Jay has been a
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`patent litigation attorney for twelve years.
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`(Id. at ¶ 4.) Mr. Jay has been
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`litigating patent cases during the entire time period and, in particular,
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`has litigated at least twenty patent infringement actions involving a
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`variety of technologies. (Id.)
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`4.
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`Mr. Jay is a member of good standing of the State Bar of California.
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`(Id.
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`at15.)
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`-4-
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`5.
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`6.
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`7.
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`8.
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`APPLES MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
`Mr. Jay has never been suspended or disbarred from practice before any
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`court or administrative body. (Id. at ¶ 5.)
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`No application of Mr. Jay for admission to practice before any court or
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`administrative body has ever been denied.
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`(Id. at ¶ 6.)
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`No sanctions or contempt citations have ever been imposed against Mr.
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`Jay by any court or administrative body.
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`(Id. at ¶ 7.)
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`Mr. Jay has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of
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`the C.F.R. (Id. at ¶ 8.)
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`9.
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`Mr. Jay understands that he will be subject to the USPTO Code of
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`Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`(Id. at ¶ 9.)
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAG VICE ADMISSION OF
`MR. JAY IN THIS PROCEEDING
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`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose. 37 C.F.R. §
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`42.10(c). Petitioner’s lead counsel, David K.S. Cornwell, is a registered practitioner.
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`APPLES MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
`Based on the facts contained herein, as supported by Mr. Jay’s Affidavit, good cause
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`exists to admit Mr. Jay pro hac vice in this proceeding.
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`Mr. Jay has an established familiarity with the subject matter at issue in this
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`proceeding. (Ex. 1036 at ¶J 10-13.)
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`Mr. Jay has reviewed in detail the pleadings submitted by Petitioner and Patent
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`Owner in this proceeding. (Id. at ¶ 10.) Mr. Jay has reviewed in detail the challenged
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`patent, U.S. Patent No. 7,802,310 ("the ’310 patent").
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`(Id. at ¶ 11.) He has also
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`reviewed in detail the relevant references asserted by Petitioner.
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`(Id. at ¶J 11-12.) Mr.
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`Jay has engaged in hours of strategic and substantive discussions regarding this
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`proceeding with counsel for Petitioner in this proceeding.
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`(Id. at ¶ 10.)
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`Mr. Jay has been Petitioner’s counsel in its co-pending district court litigation
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`against Patent Owner, Personal Web Tech. LLC and Level 3 Commc ’ns., LLC v.
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`Apple Inc. (No. 4:14-CV-0 1683) (N.D. Cal.), which concerns,
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`inter alia, the same
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`patent and subject matter at issue in this proceeding.
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`(Id. at ¶ 12.) As counsel, Mr. Jay
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`has been actively involved in all aspects of the district court litigation, including (1)
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`Petitioner’s factual investigation and development of its invalidity positions
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`regarding the claims of the ’310 patent; (2) claim construction briefing and
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`proceedings of the claim terms at issue in this proceeding; (3) depositions of
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`Petitioner’s and Patent Owner’s fact witnesses and experts regarding issues of
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`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
`obviousness and invalidity, including obviousness and secondary considerations
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`thereof; and (4) overall strategy regarding litigation of the invalidity issues relating to
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`the ’310 patent. (Id.) As counsel in this litigation, Mr. Jay has reviewed numerous
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`treatises, articles, documents and other information regarding the subject matter of
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`the ’310 patent. (Id.) He has also worked closely with experts in the field of the ’310
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`patent to further understand the subject matter at issue in this proceeding.
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`(Id.) Thus,
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`Mr. Jay has an established familiarity with the subject matter at issue in this
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`proceeding. Mr. Jay’s significant litigation experience and expertise will be of great
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`value to the Petitioner in this proceeding.
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`Based on the facts contained herein, as supported by Mr. Jay’s Affidavit, good
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`cause exists to admit Mr. Jay pro hac vice in this proceeding.
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`-7-
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`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
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`V. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that Mr. Jay be
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`admitted pro hac vice in this proceeding.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this filing to Deposit Account 19-0036 (Customer ID No. 63975).
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`Respectfully Submitted,
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`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
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`Date: October 15, 2014
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`1100 New York Avenue, N.W
`Washington, D.C.20005-3934
`(202) 371-2600
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`David K.S. Cornwell
`Lead Attorney for Petitioner
`Apple Inc.
`Registration No. 31,944
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`
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`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the above-captioned "Apple’s Motion
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`for Pro Hac Vice Admission of Michael D. Jay under 37 C.F.R. § 42.10(c)" with
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`accompanying Exhibit List and Exhibit 1036 was served in its entirety on October
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`15, 2014, upon the following parties via email:
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`Joseph A. Rhoa
`Updeep S. Gill
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`jar@nixonvan.com
`usgnixonvan.corn
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`NIXON & VANDERHYE P.C.
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203-1808
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`October 15, 2014
`Date: October
`1100 New York Avenue, N.W. (cid:9)
`Washington, D.C.20005-3934
`(202) 371-2600
`
`David K.S. Cornwell
`Lead Attorney for Petitioner
`Apple Inc.
`Registration No. 31,944
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`-9-
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`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
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